Generics lose - classmates-forum.com

[draggar]

http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1642.html

This one is a tough call - does this mean that Classmates.com (which is a web service where you can try to look up old school mates - also a HUGE spammer) has successfully filed a WIPO case to get classmate-forum.com and classmates-forum.com

So, the main question is - does this give a TM holder on a generic (and the generic being used for the main meaning of the generic) full access to all domains using that generic?

Seriously, I'm not sure how to take this right now (It's 6:20AM and I'm barely awake) but I think this is a sad day for generic owners. Imagine Windows Co. filing for a TM for Windows (the glass ones) then going after anyone with a Windows based domain because of the TM infringement.

 

[Theo]

It's all about use; there are several registered marks for "classmates". Now, don't get me wrong; I detest their spam.

 

[acronym007]

It's all about use; there are several registered marks for "classmates". Now, don't get me wrong; I detest their spam.

Bingo!

If I can share one thing with all domainer's, it's that one piece. USAGE

 

[draggar]

So, this ruling is saying that I can TM a generic and use it for the generic's meaning and get domains though WIPO?

If true, I'm calling out tomorrow and registering some TMs.

 

[BobDiGiTaL]

what? you mean a classmate of mine didn't just look me up on Classmates.com

 

[dn-101]

Now, let see. I own Classmates.com in 4 or 5 languages. Am I in trouble? :worried:

 

[britishbulldog]

So, this ruling is saying that I can TM a generic and use it for the generic's meaning and get domains though WIPO?

If true, I'm calling out tomorrow and registering some TMs.

Basically you are correct i lost a WIPO because a generic was trademarked in the U.S and here in the U.K you cannot TM a generic name yet i forwarded the letter stating exactly that from relevant authorities in the U.K and still lost,the problem you have is that by having one person to be sole judge and jury can be got at.

I mean it's a joke if you decide on a three panel verdict it costs yourself thousands of dollars,basically if you do not have the cash to fight it forget it.

WIPO=Corruption UDRP=Corruption

 

[krossat]

In the present case what facts has the Panel been given that are uncontested?

First, that Complainant registered and used its trademarks to conduct an online business involving the exchange of information and connection between former school attendees, military personnel, etc. That use by Complainant preceded by more than ten years the registration of the disputed domain names.

Second, Respondent did not deny that he is the Adam Drake who registered as a member of Complainant’s online operation in August 2006, seven months before he registered the first of the two disputed domain names.

Third, in November 2007, his blog postings on his web site directed toward an unnamed competing web site that charged for some membership services and who sent emails regarding upgrading memberships (by additional payments) was clearly aimed at Complainant, who offers paid services and upgrades based on additional payments. This shows familiarity with Complainant and its businesses prior to the registration of the second domain name at issue.

However flimsy, it does make sense. He was careless with the usage and reference to "other competetion". Usage is what it is.

 

[nameadvertising.com]

It is all about the bully. Common sense and rationale be damned. I could use some expletives here just in case any any moron tries to defend the bully pulpit.

A TM over a generic term cannot be exclusive and absolute.

 

[jdk]

Basically you are correct i lost a WIPO because a generic was trademarked in the U.S and here in the U.K you cannot TM a generic name yet i forwarded the letter stating exactly that from relevant authorities in the U.K and still lost,the problem you have is that by having one person to be sole judge and jury can be got at.

I mean it's a joke if you decide on a three panel verdict it costs yourself thousands of dollars,basically if you do not have the cash to fight it forget it.

WIPO=Corruption UDRP=Corruption

You missed one - ICANN=Corruption

or incompetent

 

[domaingenius]

Look if there is anyone here wants to fund my legal action that is now imminent
( and i mean imminent) then please do us all a favour and speak up. Could use my
case to target WIPO lack of impartiality and decision making process. Thing is
I dont think people are really interested in laying out the cash. As the
said "united we stand divided we fall" and that is the problem ,domainers
seem loath to get together and actually fight legally .

DG

If anyone on here has not read the barcelona.com Appeals Court decision
then read it NOW. Want a copy then pm me your email addy. I read
it the other day and it is excellent for us and knocks the
UDRP into what it is, a 2nd class process. Really very interesting, and
which is why I am asking someone to tell me a good registrar
in Virginia.

DG

 

[Steen]

Basically you are correct i lost a WIPO because a generic was trademarked in the U.S and here in the U.K

If UK laws were important in these cases every domainer would relocate to Anguilla or China.

 

[EnricoSchaefer]

Generally, where a domain name incorporates a complainant’s mark in its entirety, the domain name is confusingly similar to the complainant’s mark, despite the addition of other words in the domain name and despite the fact that common words may be appended or common words inserted therein. This is the so-called “objective test” adopted by the majority of WIPO panelists. See Wal-Mart Stores, Inc. v. MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. Therefore the Panel finds that the disputed domain names, both of which incorporate Complainant’s CLASSMATES mark in its plural or singular form, are confusingly similar to Complainant’s mark.
It is not for the Panel to second guess the expert regulators who determine whether or not an applicant is entitled to register a particular term as a trademark. Complainant submitted that question to the United States Patent and Trademark Office on many occasions. That body has issued several registrations of marks to Complainants. The Panel must respect that august body’s determination, absent clear and convincing evidence in an extraordinary circumstance that the issuance was in error. That is clearly not the case here.
Accordingly, the Panel finds that Complainant has met the first element of the Policy.

For good or bad, the UDRP does not really contemplate that arbitrators will question registered trademarks. They filed affirmation with the trademark office saying they had used the mark since 1995 and thus established secondary meaning:

SECTION 2(f)The mark has become distinctive of the goods/services as evidenced by the ownership on the Principal Register for the same mark for related goods or services of U.S. Registration No(s). 2584325.

This is why domainers must continue to educate themselves on trademark law as an essential part of their business knowledge. And I ditto the comments above about 'use.' Typically, cybersquatters are pretty transparent about leveraging someone elses' brand and trademark rights.

Enrico Schaefer, Attorney
Domain Name, Trademark & Cybersquatting Attorney
enrico.schaefer [@] traverselegal.com

 

[jberryhill]

For good or bad, the UDRP does not really contemplate that arbitrators will question registered trademarks.

One can, of course, obtain registration of a mark in any of quite a few non-examination countries.

What infuriates me on that point is that the UDRP was not intended to extend additional rights to TM owners.

The question for the Panel is not "is the registration valid or not".

This is a summary proceeding. Hence the question should be "is there a substantial issue in dispute".

All of the formative documents and deliberations that went into the UDRP was that it was intended as a "lightweight" procedure and was not intended to decide where there was a "genuine issue" before the panel. After a few months of the UDRP, quite a few panelists get carried away. You've seen yourself how the decisions frequently mis-characterize the arguments. In quite a few instances, although prevailing on other grounds, I have highlighted the point that I am not asking a panel to deem a registration invalid, but merely to recognize that there is a non-frivolous question as to its validity.

So, how does this relate to "rights expansion". Simple. By taking that simplistic position, the TM owner's right in a registration is converted from a rebuttable presumption to a conclusive presumption. That conversion is an expansion of rights under the UDRP that goes beyond what the registration legally affords to the TM claimant.

The real kick in the pants is that panels do this while saying "since it is a lightweight procedure, we are not going to consider validity arguments", when in fact what they are actually doing in a "lightweight" procedure is deciding validity arguments - in the TM claimant's favor. What they should be doing is simply recognizing where there is a substantial non-frivolous argument, and deciding not to decide it one way or the other.

Believe it or not, there have been instances in which a TM registrant, when the registration has been challenged in another forum, has presented a UDRP decision as evidence of the validity of the mark. That's simply bootstrapping.

 

[dmyre]

Can filing a DBA in your local county provide you with ANY protection?
By doing so, I would think that you would have some legal rights...

 

[Theo]

A DBA won't offer any protection against a federal trademark.

 

[domaingenius]

Can filing a DBA in your local county provide you with ANY protection?
By doing so, I would think that you would have some legal rights...

If you can , get into Eastern District of Virginia Court and quote the barcelona.com case from that Districts Appeals Court.


DG

http://whosells800.com/whosells800/pressetc/badwitchicann.html

 

[EnricoSchaefer]

So, how does this relate to "rights expansion". Simple. By taking that simplistic position, the TM owner's right in a registration is converted from a *rebuttable* presumption to a *conclusive* presumption. That conversion is an expansion of rights under the UDRP that goes beyond what the registration legally affords to the TM claimant.

Amen brother.

 

[jberryhill]

Amen brother.

What's particularly maddening is that I can name certain panelists who are very bright and know completely well that I was presenting a "non-frivolous good-faith argument" of invalidity - not for the purpose of having them rule on the question, but for the purpose of demonstrating they should not rule on the question, and they will still say something to the effect of "respondent asks us to find the registration invalid".

It is insidious and intentional point-missing on their part. They know exactly what they are doing.